Commercialisation Protocol

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Refer to MOPP D3.1 for information on QUT's Intellectual Property Policy.

1. Introduction

1.1 What this document is about

This document sets out QUT’s Protocol in relation to the commercialisation of intellectual property. It provides guidance to staff and students about the framework at QUT for dealing with the commercialisation of intellectual property.

This Protocol complements QUT’s Intellectual Property Policy.

1.2  Administration of Protocol

The administrator of this Protocol is the Deputy Vice Chancellor (Research and Commercialisation), who may, at the Deputy Vice Chancellor (Research and Commercialisation)’s discretion amend this Protocol, provided any such amendment is not inconsistent with QUT’s Intellectual Property Policy.

1.3 What is commercialisation?

One of the primary functions of QUT, as demonstrated by QUT’s learning and teaching activities, is that of community service. That function is also demonstrated by QUT’s objective that the outcomes of its research be beneficial to the community.

The commercialisation of intellectual property is the process by which the outcomes of research at QUT reach the community, whether or not for monetary gain.

1.4 Why commercialise? – community benefit

Community benefit is often achieved by putting QUT’s research outcomes, the results of QUT staff and students’ innovation and inventiveness, into the public domain. This is done via a number of mechanisms such as publication, policy change, knowledge transfer and industry adoption. As a result of this, the community is informed about, and is able to benefit from, QUT’s research outcomes.

In terms of industry adoption, this occurs when the innovation and inventiveness of QUT’s staff and students is disseminated into an industry or sector, and that industry or sector then adopts the new knowledge.

However, for some research, commercialisation does not occur unless there is investment into technology, to take technology into a market ready state. That investment is usually undertaken by an industry partner who is an investor into a start up company, or a licensee. For other research, commercialisation does not occur unless QUT partners with a commercial partner with the skills and resources to successfully commercialise.

Where community benefit can only be achieved by forming an alliance with an industry partner or investor, and that alliance does not occur, the results may be less than optimal. The technology may never reach a market ready state, or those skills and resources may not be accessed, and the community as a result may never benefit from QUT’s research outcomes in this particular area.

To achieve the community objective that the outcomes of QUT’s research be beneficial to the community, QUT will facilitate and promote commercialisation of intellectual property, including by forming alliances with industry partners and investors.

Some examples of alliances with industry partners are:

1. granting a license of intellectual property to a commercial partner to exploit intellectual property
2. entering into contract research agreements to undertake research at commercial rates
3. spinning out a start up company into which intellectual property is licensed or assigned, and into which a venture capitalist or other investor makes an investment to fund research and development
4. spinning out a company that becomes operational and trades, and pursues a business opportunity
5. assigning intellectual property to a commercial partner.

1.5 Why commercialise? – increasing QUT’s resources

The process of commercialisation often results in QUT having relationships with industry partners. Usually, these will be research relationships where an industry partner will financially support research at QUT.

If commercialisation is successful other financial returns may flow to QUT, including royalties or shareholdings in a spin out company, which will increase the sources of revenue for QUT.  This additional revenue may in turn facilitate further research activity.

1.6 Why commercialise? – rewarding innovation and inventiveness

Additionally, QUT wants to personally reward staff and students whose inventiveness and innovation has resulted in successful commercialisation.

The Intellectual Property Policy sets out the framework for the distribution of commercialisation revenues to staff and students whose inventiveness and innovation has resulted in successful commercialisation.

2. QUT Entities Concerned With Intellectual Property

2.1 Introduction

Intellectual property may be created at many stages, including:

1. Research performed under grants from government and other agencies
2. The provision of consulting services
3. Alliances with industry partners
4. Collaborations with other researchers and universities
5. Collaborations with companies
6. Publication of papers and academic manuscripts.

The following offices within QUT may be concerned with the management and commercialisation of intellectual property at different stages:

1. qutbluebox Pty Limited (“qutbluebox”)
2. The Office of Commercial Services
3. The Office of Research
4. The Development Office

The role of each of these entities is described below.

2.2 qutbluebox

qutbluebox is a company which was established in 2006 with the specific function of commercialising intellectual property developed at QUT. Its aim is to liaise with, encourage and mentor QUT researchers to inspire a culture of commercialisation within QUT. This culture will foster innovation and provide greater incentives for and motivation towards the identification of commercialisable intellectual property.

qutbluebox works with creators to assess, protect, manage, and commercialise QUT’s intellectual property (other than teaching materials).

The roles of qutbluebox include the following:

1. Assessing commercialisation opportunities;
2. Protecting intellectual property by seeking patent protection when that is appropriate;
3. Managing intellectual property;
4. Creating commercialisation opportunities;
5. Finding potential investors and potential licensees;
6. Licensing intellectual property;
7. Forming spin out companies;
8. Dealing with complex intellectual property issues;
9. Dealing with the commercial issues involving the management, protection and commercialisation of intellectual property;
10. Dealing with risk issues involving the management, protection and commercialisation of intellectual property;
11. Negotiating intellectual property transactions;
12. Negotiating contract research agreements involving significant QUT intellectual property; and
13. Undertaking education and training on commercialisation matters for QUT staff and students.

Intellectual property with commercialisation potential identified by staff and students needs to be disclosed to qutbluebox (see Section 4.2).

If qutbluebox is alerted to a project that should be more appropriately dealt with by another QUT entity, it will refer that project to the more appropriate entity.

2.3 Office of Commercial Services

The Office of Commercial Services is an office within QUT that works to promote contact between the University and external agencies through activities including commercial research, consultancy, continuing professional education and event management.

Its roles include:

1. Contract research (excluding contract research involving significant QUT intellectual property that is more appropriately managed by qutbluebox);
2. Consultancies;
3. Continuing professional education and training;
4. Management, protection and, if appropriate, commercialisation of teaching materials;
5. International projects; and
6. Cooperative research centres and large infrastructure projects.

If the Office of Commercial Services is alerted to a project that should be more appropriately dealt with by qutbluebox or a more appropriate QUT entity, it will refer that project to the more appropriate entity.

Where the Office of Commercial Services is alerted in its own transactions to occasions where commercialisation or related risk to QUT needs to be considered, it will liaise with qutbluebox.

2.4 Office of Research

The Office of Research is an office within QUT which supports the development of QUT's research profile. All competitive grant applications by QUT academic staff are administered through this office, which ensures professional management of successful grants and accurate maintenance of QUT's research performance data

Its roles include:

1. External research-related granting bodies in both the public and private sector including the ARC and NHMRC
2. QUT’s internal grant schemes
3. Research data management
4. Research ethics

If the Office of Research is alerted to a project that should be more appropriately dealt with by qutbluebox or a more appropriate QUT entity, it will refer that project to the more appropriate entity.

Where the Office of Research is alerted in its own transactions to occasions where commercialisation or related risk to QUT needs to be considered, it will liaise with qutbluebox.

2.5 Development Office

The Development Office is an office within QUT which facilitates and supports QUT’s engagement with community, business, industry and government.

Its roles include:

1. Facilitating external access to key contacts within QUT and advising on relationship management, to enhance the quality of engagement with community, business, industry and government.
2. Coordinating philanthropic, sponsorship, grants or partnership-linked support from corporations, government, foundations, other organisations and individuals for core QUT activities including, senior academic appointments; postdoctoral fellows; teaching programs; scholarships; prizes; equipment and other resources.
3. Coordinating, facilitating and supporting specific partnerships QUT has with industry, government and community organisations
4. Coordinating, facilitating and supporting alumni programs including growing the active involvement of and communication with graduates and the QUT community

If the Development Office is alerted to a project that should be more appropriately dealt with by qutbluebox or a more appropriate QUT entity, it will refer that project to the more appropriate entity.

Where the Development Office is alerted in its own transactions to occasions where commercialisation or related risk to the QUT needs to be considered, it will liaise with qutbluebox.

3. Role of Contributors in Managing and Commercialising Intellectual Property

3.1 Who is a Creator

The Intellectual Property Policy (put web link here) provides the definition of a “creator for the purposes of this protocol.

3.2 The Role of Creator

Creators of intellectual property have a critical role to play in assisting in the management and commercialisation of intellectual property.

QUT relies on its staff and students to play an active and dedicated part in the management and commercialisation of intellectual property, without which QUT cannot achieve the community benefit objectives that it strives for, as described in section 1 above.

3.3 Expectations upon Creators

QUT expects that creators to QUT intellectual property will help QUT and qutbluebox achieve the optimal community benefit able to be achieved for the intellectual property developed at QUT. qutbluebox will undertake education and training for staff and students to support them in realising these expectations.

Specifically, QUT expects creators to

1. identify intellectual property that may have commercialisation prospects;
2. disclose that identified intellectual property via forms available on the qutbluebox website
3. confer with qutbluebox on the timing of publications to ensure that publication and intellectual property protection may be achieved without either hindering the other;
4. assist qutbluebox in the assessment, management, protection, and commercialisation of intellectual property;
5. assist qutbluebox in inventorship and contributor determinations;
6. ensure that qutbluebox is engaged in any process of application for patents;
7. ensure that qutbluebox is involved in the engagement of any patent attorneys;
8. work with patent attorneys engaged by qutbluebox, including preparing parts or drafts of patent specifications;
9. assist qutbluebox in preparing other documents that will assist in the protection and commercialisation of intellectual property including technical descriptions and evaluations, and market descriptions and evaluations;
10. sign documents required in the patent application process within an agreed timeframe;
11. answer questions and provide information requested by qutbluebox within an agreed timeframe;
12. promptly notify qutbluebox when approached by a possible commercial partner;
13. assist qutbluebox in its negotiations with commercial partners;
14. include qutbluebox in any commercial discussions relating to intellectual property;
15. ensure that qutbluebox is consulted about, and agrees to, the signing of any contracts or commitments binding upon QUT or qutbluebox; and
16. seek qutbluebox approval for any media statements regarding intellectual property with commercial potential.

Similarly, QUT’s expects that qutbluebox will respond within a timely and commercial timeframe.

4. Identification and Disclosure of Intellectual Property

4.1 Identification of IP

QUT relies on staff and students in consultation with qutbluebox to identify commercialisable intellectual property. Staff and students need to be alert to identifying intellectual property to qutbluebox, as often, commercialisable intellectual property is created, but not recognised as intellectual property, or not recognised as commercialisable.

This represents a loss of opportunity:

1. to QUT - in terms of its reputation and in the achievement of its community obligations;
2. to the staff or students that created theintellectual property -  who by reason of the lost opportunity do not receive any commercialisation revenue; and
3. to the faculty or institute in which the staff or students created that intellectual property - which by reason of the lost opportunity does not receive commercialisation revenue  that may have been available to fund further research by those staff and students.

Staff and students must promptly and fully disclose to qutbluebox any intellectual property with commercialisation potential.

4.2 Manner of making an IP disclosure

Creators must disclose intellectual property by:

1. completing a Creator Disclosure Form which is available on  qutbluebox’s website; and
2. uploading the Creator Disclosure Form to qutbluebox from its website.

The website also contains guidelines for the completion of the Creator Disclosure Form.

5. Assessment of Intellectual Property

5.1 Initial Assessment

qutbluebox will make an initial assessment of the intellectual property disclosed in a Creator Disclosure Form.

That assessment will be made with the assistance of the creators.

The assessment will include matters such as:

1. the commercialisation prospects of the intellectual property;
2. the appropriateness of seeking the protection of the intellectual property, for example, by filing a patent application;
3. whether it would be prudent to undertake further work or research on the intellectual property to bring it to a more commercialisable state;
4. sources of research monies for further research;
5. commercialisation strategies; and
6. potential industry partners.

This list is by no means exhaustive.

qutbluebox will undertake this assessment within an appropriate commercial timeframe, and will inform the creators of any time constraints that may impact upon this process.

qutbluebox’s assessment will encompass all relevant factors to thoroughly assess the intellectual property and the commercialisation opportunity.

5.2 Continuous assessment

qutbluebox will make continuous assessments of intellectual property.

Intellectual property and the landscape in which it is commercialised is dynamic. As a result, different commercialisation strategies may be employed as further research is undertaken.

6. Protection of Intellectual Property

There are many different ways to obtain protection for intellectual property.

qutbluebox will seek advice of patent attorneys, creators and other experts as appropriate in order to determine the best approach for each individual case.

6.1 Patenting

qutbluebox will be responsible for assessing:

1. whether to apply for a patent and the identity of the proposed applicant(s);
2. the timing of a patent application;
3. the scope of protection to be sought;
4. whether to proceed from a provisional application to a patent cooperation treaty application;
5. whether to proceed to national filings of a patent application.

qutbluebox will implement those decisions and manage the prosecution of patents.

6.2 Other forms of protection

qutbluebox will also be responsible for making similar assessments in relation to other forms of intellectual property protection.

qutbluebox will implement those decisions and manage the enforcement of those protections.

6.3 Publications and seeking intellectual property protection

The transfer of knowledge and technology through publication and commercialisation has always been, and remains, an important function of QUT. QUT encourages staff and students to publish their research findings in academic and scholarly journals, and recognises the importance of both in terms of career progression.

However, commercialisable intellectual property may sometimes need to be maintained in confidence, so as not to affect adversely its commercialisation prospects.

The objective to publish and the objective to commercialise are not mutually exclusive, but should be complementary, each supporting the other. Indeed, publication is a valuable commercialisation tool.

Intellectual property that is disclosed to qutbluebox, can and should be the subject of publications.

qutbluebox will work with creators to maximise:

1. the opportunities for the publication of commercialisable intellectual property; and
2. the commercial opportunities for commercialisable intellectual property.

In practice, this will mean that qutbluebox and creators will work together to formulate timetables that:

1. do not unnecessarily hinder publications, but
2. do not put the protection and commercialisation of intellectual property at risk.

This will preserve the achievement of both objectives in a cooperative fashion, without the achievement of either objective hindering the other.

7. Distribution of Net Commercialisation Revenue

7.1 Commercialisation Revenue Protocol

QUT will distribute net commercialisation revenue it receives from the commercialisation of QUT IP in accordance with QUT’s Intellectual Property Policy and the Commercialisation Revenue Protocol.